Crowdsourcing Prior Art to Defeat 3D Printing Patent Applications

The America Invents Act changed U.S. patent law to allow preissuance submissions, a mechanism by which third parties can submit patents or printed publications to the United States Patent & Trademark Office (USPTO) for consideration during patent examination, along with “a concise description of the asserted relevance of each submitted document.”[2] The U.S. Congress intended preissuance submissions to help the USPTO increase the efficiency of examination and the quality of issued patents.[3] Congress did not, however, intend the use of this mechanism to interfere with patent examination.[4] Nor did it intend preissuance submissions to allow for third party protest or preissuance opposition.[5] Yet a segment of the 3D printing (3DP) community, known as Makers, is using preissuance submissions as a sword to oppose 3DP-related patent applications. Perhaps more importantly, they are leveraging the concept of crowdsourcing to do so, potentially creating problems for patent applicants everywhere.[6]

To understand why and how Makers are mobilizing to challenge patents through presissuance submissions, one must first understand what 3DP is, and the composition of the 3DP community. 3D printing—more formally known as additive manufacturing—is a technology that creates three dimensional objects from CAD files. There are many legacy and emerging 3DP technologies. Generally, 3DP works by fusing layer upon layer of materials, such as plastics, powder metals, and ceramics, to build a final, fully formed product, much as Athena sprung full-blown from the head of Zeus. This process requires a digital 3D model of the product, stored in a CAD file, and a 3D printer. Digital product models can be obtained by either (1) designing the product with a CAD program; (2) downloading an existing CAD file from the Internet; or (3) scanning an existing product with a 3D scanner to create a CAD file. Further, almost anyone can buy a 3D printer today; they are sold through Skymall and at Staples. Where 3DP was once cost prohibitive for most, ‘prosumer’ and home printers are now available at reasonable prices.

People can and are using 3D printers to make just about anything. Ordinary people are using 3D printers to make things like working vinyl records, guns, cases for cellphones, jewelry, art, and even 3D printers that can self-replicate. And while 3DP is starting to tilt past the tipping point into the mainstream, the basic technology has been around since the 1980s.

The 3DP community consists of essentially four segments: small and large scale, closed and open. Although the lines between them can be fuzzy, the large-scale segment is essentially the industrial segment, which relies on a closed platform, and therefore on intellectual property. Of equal—and some would say more—significance, is the small-scale segment, which consists of entrepreneurs, garage, basement, and school lab innovators, and kids, many of whom are dedicated to open availability of the technology. They are called “Makers.” Makers are a growing and potentially powerful force, similar in some ways to PDP music file sharers, but more organized. They are a community and decide, collectively, whether and what intellectual property is appropriate in the 3DP world. Makers would keep 3DP open and unhindered by the constraints of intellectual property.

Makers have discovered preissuance submissions as a method to combat 3DP-related patents they do not like. They believe 3DP-related patents will stifle innovation, not promote it. According to the Electronic Frontier Foundation, “the incremental nature of innovation in 3D printing makes it particularly unsuitable for patenting” and “openness often outperforms the patent system at spurring innovation.” Thus, organizations like the EFF are marshaling the Makers, using crowdsourcing to identify prior art to challenge 3DP-related patent applications they view as “threatening” or “dangerous.”

Specifically, the EFF website asks Makers to help identify 3DP-related patent applications to attack. The EFF has also partnered with Ask Patents to harness the power of crowdsourcing to find the best available prior art. Ask Patents allows anyone to make a “call for prior art” about any application. After a call for prior art has been made, visitors to a webpage dedicated to the application can identify possible prior art and rate it until the cream rises to the top.[7]

Using crowdsourcing to identify prior art and then submitting the art in preissuance submissions may be particularly effective for 3DP-related applications. Because 3DP has been around for over 30 years and has been widely adopted and developed by thousands of Makers and the industrial sector, there could be tons of prior art. Moreover, the open nature of the Maker movement makes Makers very receptive to collaborative efforts to identify prior art and challenge patent applications. In fact, Makers, led by the EFF or others, have already used the preissuance submissions process to file prior art with the USTPO. As of May 2013, the EFF filed crowdsourced prior art in connection with six 3DP-related patent applications.

The Makers’ use of preissuance submissions has profound implications for patent applicants everywhere. Most obviously, coupling the crowdsourcing of prior art with preissuance submissions could be copied in any area of technology with an active open platform movement. And the internet and social media are very effective tools for forming such movements for any type of technology. In fact, the EFF plans to extend its crowdsourcing prior art/preissuance submission model to mesh networking technology.

Additionally, the preissue submission of 3DP-related prior art could reduce the number and breadth of patents that issue in the 3DP space. A similar effect could occur in connection with any technology with a community using such a crowdsourcing prior art model.

The irony of the Makers’ preissuance submissions may be that stronger but narrower—though possibly fewer—patents eventually issue. After a preissuance submission is filed with the USPTO, the submitter’s involvement with the application ends. The patent applicant then gets the chance to distinguish its pending claims from the submitted prior art. If the applicant overcomes the prior art, it will obtain a patent that has already been tested against what may be the best available prior art. In other words, what does not kill the application makes it stronger. If stronger 3DP-related patents issue after Makers’ preissue submissions, the Maker community’s goal of blocking and weakening patent protection may be undercut.

It will be interesting to see how these unintended consequences play out. Will the use of preissuance submissions be restricted? Will fewer or narrower patents issue in this space? Will Makers unintentionally help stronger 3DP-related patents to issue? Or will they keep their powder dry and save strong prior art for post-issue validity challenges? Only time will tell. We plan to watch it closely.

[1] John is a partner and Anita is an associate with the Finnegan IP law firm, Washington, DC.

John Hornick has been a partner at the intellectual property (IP) law firm of Finnegan, Henderson, Farabow, Garrett & Dunner LLP, which is based in Washington, DC, for over twenty years. Part of his practice focuses on the IP issues of 3D printing. During his years with Finnegan, Mr. Hornick has litigated close to 100 IP cases in more than 30 U.S. federal courts in 18 states.
Anita Bhushan practices all aspects of patent law, with a particular emphasis on litigation before the U.S. district courts and the U.S. International Trade Commission. Ms. Bhushan also maintains a counseling and prosecution practice with a focus on electrical and computer technologies.

What do you think of the makers strategy of publishing algorithms to generate defensive prior art on 3D printing — like this one for determining “obvious” 3D printing materials? http://www.thingiverse.com/thing:73427

http://twitter.com/drcabl3 Thomas Walpole

So. You’re angry that invalid patent applications(A patent application is not valid if there is prior art) are being pointed out as being invalid?

You’d prefer it if invalid patent applications continued to be treated as valid?

John Hornick

Thanks for the spirited comments and for increasing my vocabulary. Although I may not be a particularly bright fellow, partly because I say things LIKE “For four years Michelangelo painstakingly applied layers of paint to the chapel ceiling until an image appeared, much as Athena sprung full-blown from the head of Zeus,” I agree with proboscidean (http://boingboing.net/2013/05/19/patent-lawyers-help-the-evil.html ). I also believe crowdsourcing prior art is a brilliant use of the internet. It is too soon to tell if defeating or narrowing 3DP patents will be good or bad for the industry, but I suspect that preissue submissions fueled by crowdsourced prior art will turn out to be a positive force. Regarding the Makers, I meant the capital M as a compliment, but there seems to be a split between people who favor the issuance of valid if not narrow patents and people who would do away with them altogether. I will be speaking on “3D Printing and the Future (or Demise) of Intellectual Property” in Chicago in July ( http://www.mediabistro.com/inside3dprinting/?c=i3dhonka ), where I will have more to say on this topic. Also, follow me on twitter @JHornick3D1Stop .

http://twitter.com/mrbillypete Billy Pete Janss

Penultimate paragraph; I fail to see the irony. If an influx of prior art exposition yields ‘stronger but narrower’ narrow patents (More valid – one might say) this would entail precisely the increase in ‘efficiency and quality’ that preissuance intends. One is surprised an attorney of Mr. Hornick’s stature making such an inept argument. Presumably, patents which are less vague and overreaching provide less opportunity for profitable litigation, hence are of lower quality from the perspective of a barratrous parasite.

Phillip Reed

“Additionally, the preissue submission of 3DP-related prior art could
reduce the number and breadth of patents that issue in the 3DP space. ”

The authors have failed to explain how this is a problem.

http://www.facebook.com/shane.selman Shane Selman

There is no indication in the law or the summary that “Congress did not, however, intend the use of this mechanism to interfere with patent examination.”[1] Nor have you made it clear how submission of relevant prior art for review is, in any way, “interfering” with the patent review process. The purpose of patent review is to grant only patents on legitimately innovative or transformative inventions. While a large volume of spurious claims of prior art could be detrimental to review process, you yourself provide evidence that the parties involved are going to great lengths to validate any claims before submitting ( your citation [7] ).

[1]Relevant Section of the Law – from your citation – [4] H.R. Rep. No. 110-314 at 37 (2007). I can find no other relevant section that the one below which explicitly describes the 3rd party submission process.

(Sec. 9) Imposes time restrictions on the publication of certain pending patent applications.

Allows any third person to submit for consideration and inclusion in the record of a patent application, any patent, published patent application, or other publication of potential relevance to the examination of a patent application. Requires such submission to be made in writing, with a concise description of its relevance, before the earlier of: (1) the mailing of a notice of allowance in the application for a patent; or (2) the date that is six months after publication of the application or that date of the first rejection of any claim in the application, whichever is later.

Dan_Someone

Why would narrower but stronger patents be a problem for Makers?

http://twitter.com/kdvncm Keith Spiker

Mr. Hornick states: “Makers would keep 3DP open and unhindered by the constraints of intellectual property.” This is incorrect. Two large 3DP projects (from Makers) have been the Thing-O-Matic project (from Makerbot Industries) and the RepRap project, both of which rely on intellectual property laws (particularly copyright laws) to enforce the licenses and terms under which the intellectual property can be used. I believe the Thing-O-Matic project uses the GNU GPLv3 license and the RepRap project uses the GNU General Public License. On his website, Mr. Hornick claims to have “[h]andled one of the first copyright cases involving the enforceability of the GNU General Public License.” Why does Mr. Hornick ignore the GNU GPL as a constraint of “intellectual property” here? Ignorance of the Makers, maybe? You should learn your subject before you publish.

Also, maybe copyright lawyers (like Mr. Hornick) should stick to copyright and not patent law. Mr. Hornick does not make his case.

HowieFeltersnatch

John Hornick doesn’t strike me as a particularly bright fellow. He’s mad because a way has been found to point out that BS patents are BS more easily? I know that lawyers are scum, but this scumbag really takes it to a new level. Hornick is little more than a whore for the patent trolls, who would try to trot out stale old tech and patent it.

http://twitter.com/kdvncm Keith Spiker

We all know that the only legitimate way for large groups of people to collaborate is the corporation. This “crowd sourcing” – only made possible through new technology – is dangerous. These are the same people that crowdsourced opposition to SOPA. simply dangerous.

Thanks for the spirited comments and for increasing my
vocabulary. Although I may not be a
particularly bright fellow, partly because I say things LIKE “For four years Michelangelo
painstakingly applied layers of paint to the chapel ceiling until an image
appeared, much as Athena sprung full-blown from the head of Zeus,” I
agree with proboscidean
(http://boingboing.net/2013/05/19/patent-lawyers-help-the-evil.html ). I
also believe crowdsourcing prior art is a brilliant use of the internet. It is too soon to tell if defeating or
narrowing 3DP patents will be good or bad for the industry, but I suspect that
preissue submissions fueled by crowdsourced prior art will turn out to be a
positive force. Regarding the Makers, I meant
the capital M as a compliment, but there seems to be a split between people who
favor the issuance of valid if not narrow patents and people who would do away
with them altogether. I will be speaking
on “3D Printing and the Future (or Demise) of Intellectual Property” in Chicago
in July (http://www.mediabistro.com/inside3dprinting/?c=i3dhonka ), where I will have more to say on this
topic. Also, follow me on twitter @JHornick3D1Stop .

Eric Scoles

I guess I’m not understanding the problem, here. If a patent isn’t novel, it shouldn’t be granted, right? And the primary means by which you judge whether the patent is novel is by examining prior art — right? So, this is actually HELPING TO DETERMINE whether the patents should be granted — right?

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